Case No.: 11-CV-01846-LHKORDER GRANTING IN PART AND DENYING IN PART MOTION FOR JUDGMENT AS A MATTER OF LAW

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UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF CALIFORNIASAN JOSE DIVISIONAPPLE, INC., a California corporation,Plaintiff,v.SAMSUNG ELECTRONICS CO., LTD., AKorean corporation; SAMSUNGELECTRONICS AMERICA, INC., a New York corporation; SAMSUNGTELECOMMUNICATIONS AMERICA, LLC,a Delaware limited liability company,Defendants.)))))))))))))))Case No.: 11-CV-01846-LHKORDER GRANTING IN PART ANDDENYING IN PART MOTION FORJUDGMENT AS A MATTER OF LAWOn August 24, 2012, after a thirteen day trial and approximately three full days of deliberation, a jury in this patent case reached a verdict.

See

ECF No. 1931. Apple now seeks judgment as a matter of law to overturn certain of the jury’s findings, and judgment as a matter of law as to other issues that the jury did not reach.

See

ECF No. 2002 (“Mot.”). In the alternative,Apple moves for a new trial on most of the issues on which Apple seeks judgment as a matter of law. For the reasons discussed below, the Court GRANTS Apple’s motion for judgment as amatter of law that claims 10 and 15 of Samsung’s U.S. Patent No. 7,675,941 are invalid; DENIES

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Case No.: 11-CV-01846-LHKORDER GRANTING IN PART AND DENYING IN PART MOTION FOR JUDGMENT AS A MATTER OF LAW

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Apple’s motion for judgment as a matter of law in all other respects; and DENIES Apple’s motionfor a new trial.

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I. LEGAL STANDARD.

Rule 50 permits a district court to grant judgment as a matter of law “when the evidencepermits only one reasonable conclusion and the conclusion is contrary to that reached by the jury.”

Ostad v. Oregon Health Sciences Univ.

, 327 F.3d 876, 881 (9th Cir. 2003). A party seeking judgment as a matter of law after a jury verdict must show that the verdict is not supported by“substantial evidence,” meaning “relevant evidence that a reasonable mind would accept asadequate to support a conclusion.”

Callicrate v. Wadsworth Mfg.,

427 F.3d 1361, 1366 (Fed. Cir.2005) (citing

Gillette v. Delmore

, 979 F.2d 1342, 1346 (9th Cir.1992)).A new trial is appropriate under Rule 59 “only if the jury verdict is contrary to the clearweight of the evidence.”

Apple moves for judgment as a matter of law that the unregistered iPad/iPad 2 Trade Dressis (1) protectable; (2) infringed; and (3) famous and diluted. In the alternative, Apple moves for anew trial on the unregistered iPad/iPad 2 Trade Dress. The jury found that the unregisterediPad/iPad 2 Trade Dress was not protectable and not famous. Therefore, the jury did not reach thequestions of whether Samsung infringed or diluted Apple’s unregistered iPad/iPad2 Trade Dress.1.

ProtectabilityAt trial, Apple had the burden of proving protectability by a preponderance of the evidence.

See

15 U.S.C.A. § 1125; Final Jury Instruction No. 63. “The physical details and design of aproduct may be protected under the trademark laws only if they are nonfunctional and haveacquired a secondary meaning.”

Clamp Mfg. Co., Inc. v. Enco Mfg. Co., Inc.

, 870 F.2d 512, 515

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Apple has also moved for an amended judgment to award additional damages, and forprejudgment interest. These claims will be addressed in a separate order.

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Case No.: 11-CV-01846-LHKORDER GRANTING IN PART AND DENYING IN PART MOTION FOR JUDGMENT AS A MATTER OF LAW

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(9th Cir. 1989). In finding the trade dress not protectable, the jury might have found that eitherrequirement was not met, or that neither was met. Thus, to establish that its unregistered tradedresses are protectable as a matter of law despite the jury’s contrary verdict, Apple would have toshow that a reasonable jury would necessarily have found both non-functionality and secondarymeaning.There are two types of functionality: utilitarian functionality and aesthetic functionality.

See TrafFix Devices, Inc. v. Mktg. Displays, Inc.

, 532 U.S. 23, 33 (2001). Under the traditional,utilitarian functionality test, a trade dress is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.”

Id

. In applying this test, the NinthCircuit assesses four factors: “(1) whether advertising touts the utilitarian advantages of the design,(2) whether the particular design results from a comparatively simple or inexpensive method of manufacture, (3) whether the design yields a utilitarian advantage and (4) whether alternativedesigns are available.”

Talking Rain Beverage Co. v. South Beach Beverage Co

., 349 F.3d 601,603 (9th Cir. 2003) (citing

Disc Golf Ass’n, Inc. v. Champion Discs, Inc.

, 158 F.3d 1002, 1006 (9thCir. 1998));

see also Au-Tomotive Gold, Inc.

,

v. Volkswagen of America

,

Inc.

, 457 F.3d 1062, 1072n.8 (9th Cir. 2006) (acknowledging the four factor test applied by the Ninth Circuit). Apple arguesthat the evidence of non-functionality and secondary meaning presented at trial establishedprotectability as a matter of law.Apple cites evidence attempting to establish utilitarian functionality under all four

DiscGolf

factors. As to the first factor, “whether advertising touts the utilitarian advantages of thedesign,” Apple points to iPad advertising that presents the iPad design without touting anyutilitarian design advantages.

See

Mot. at 3 (citing PX11; PX128). As to the second factor,“whether design results from a comparatively simple or inexpensive method of manufacture,”Apple cites the testimony of Apple design executive Christopher Stringer that the iPad was notdesigned to make manufacture cheaper or easier.